backIntroduction
On July 11, 2023, the National Institute of Industrial Property (INPI) issued Ordinances nº 26 and 27/2023, which were published in the Industrial Property Magazine (RPI) nº 2740. In accordance with the INPI’s latest positions, the ordinances bring significant changes to the formal and technical aspects related to the registration of technology transfer contracts in Brazil.
These changes emerged from discussions and demands presented during the Joint Seminar organized by the Licensing Executive Society (LES) Brazil and the International Chamber of Commerce – ICC-Brazil in November 2022. During this event, INPI participated as a speaker-debater, seeking to improve services related to registering and annotating technology contracts, thus meeting the needs of the market.
As a result, INPI published document SEI INPI nº 0747049 in December 2022, highlighting legal aspects and technical understandings to be reviewed.
Main Changes
Ordinance/INPI/PR No. 26 introduces a new administrative procedure for registering licenses, assignments of industrial property rights, and the registration of technology transfer and franchising agreements.
On the other hand, Ordinance/INPI/PR No. 27 defines the Examination Guidelines applicable to the annotation or registration of industrial property right license agreements and the registration of integrated circuit topography, technology transfer, and franchising.
Among the formal changes, the withdrawal of some obligations stands out, such as (i) notarization and apostille/consularization of digital signatures performed abroad; (ii) initials on all pages of contracts; (iii) presentation of statutes, articles of incorporation or articles of incorporation in requests for annotation/registration; (iv) insertion of two witnesses when the contract provides for a Brazilian city as the place of signature; (v) acceptance of digital signatures without ICP-Brazil certificate; and (vi) presentation of the Registration Form, the latter being an extensive form with information about the licensee.
In any case, the most relevant innovations are in the technical field: the documents establish the acceptance of licensing of non-patented technology and allow the licensing of trademark applications.
Conclusion
The presented changes aim to modernize and simplify the registration of technology contracts in Brazil, thereby stimulating innovation and investments in the country and keeping pace with the dynamism of the technology and innovation market.
This moment marks a significant milestone for technology transfer in Brazil and reinforces INPI’s commitment to the country’s technological development. s
The new Ordinances came into force upon publication in the RPI, as mentioned. Consequently, all procedures for registering and annotating technology contracts from that date onwards must follow these new guidelines.
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The Campos Thomaz & Meirelles Advogados team is available to advise and answer questions about registering technology transfer agreements in Brazil.
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